Deepak Malhotra, JD, BSEE
Inventor and US Patent Attorney
Are you looking for a partner to help protect your ideas?
Let me introduce myself. I am Deepak Malhotra. I have over 20 years experience in patent preparation and prosecution, and have successfully prosecuted hundreds of patent applications to allowance. I have worked on large portfolios for many Fortune 500 companies. Importantly, I am dedicated to strong customer service. That’s not something you experience much in the legal world – but I believe you deserve timeliness as well as quality.
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Software Patent Lawyer, Electronics Patent Attorney
Deepak Malhotra, JD, BSEE has worked extensively with various technologies including software, RF communications, sensors, smart cards, ESD protection, tape drivers, servo systems, printers, static memory cells, dynamic memory cells, database, publishing systems, virtual reality, wafer production methods, wafer polishing, antenna diversity systems, RF collision arbitration systems, marketing systems, electron multipliers, microwave electronics, digital clock recovery loops, secure network authentication systems, user interfaces, and more. Malhotra Law Firm, PLLC was a minority certified patent law firm, certified by the Northwest Mountain Minority Supplier Development Council.
Malhotra Law Firm, PLLC has experience in:
- Protecting electrical, electronics, and mechanical inventions
- Assisting venture-capital funded start ups & Fortune 500 companies
- Helping foreign companies secure intellectual property protection in the U.S.
- Protecting software inventions with software patents
- International protection of inventions
Patents
In the language of the statute, any person who “invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvements thereof, may obtain a patent,” subject to the conditions and requirements of the law. These classes of subject matter taken together include practically everything made by man and the processes for making them.
Trademarks
The primary function of a trademark is to indicate origin. However, trademarks also serve to guarantee the quality of the goods or services and, through advertising, serve to create and maintain demand. Rights in a trademark are acquired by use or applying for a federal trademark registration before use.
Business Method Patent Considerations
Attitudes towards business method patents have swung back and forth like a pendulum but recently the Supreme Court has refused to deem business methods patent ineligible. Business methods are generally eligible for patent protection if they pass a “Mayo/Alice” test. The first part of the test is to determine whether the claims are directed to an abstract idea, a law of nature or a natural phenomenon (i.e., a judicial exception). If the claims are directed to a judicial exception, the second part of the Mayo test is to determine whether the claim recites additional elements that amount to significantly more than the judicial exception. Many inventions that are thought to be business method inventions are really what I consider to be software inventions.
Software Patents
Like it or not, software patents are here to stay! Instead of hoping that they go away, your best defense against future potential infringement threats by others is to have an arsenal of your own. The U.S. Supreme Court, in a case known as Alice v. CLS, held that using a computer to automate a well known financial method is an unpatentable abstract idea. So what types of software inventions are patent-eligible?
How to Protect Phone Apps
Are you a smart phone app developer? If so, you will want to know what forms of intellectual property are available for protecting smart phone apps.
Provisional Patent Applications
The United States has a form of patent application called a Provisional Patent Application. Some people feel that these are an easy and inexpensive way to obtain a filing date and some patent rights, but they are usually unaware of the risks and downside.
Important Changes to U.S. Patent Law: America Invents Act (AIA)
The United States switched from a First-to-Invent system to a First-to-File system. That makes it important to file patent applications sooner rather than later.
Conducting A Patent Novelty Search
A thorough patent search is an enormous undertaking. However, you can start with a novelty search that covers the most likely languages and places.
The History of Software Patents Blog
USC IP PARTNERSHIP V META , FEDERAL CIRCUIT 2023 (SOFTWARE PATENTS)
USC brought suit for infringement against Facebook, Inc. (now Meta Platforms, Inc.), asserting that its “News Feed” feature infringes claims 1–17 of U.S. Patent No. 8,645,300. The software patent relates to a search engine software method for predicting which webpages to recommend to a web visitor based on inferences of…
TRINITY INFO MEDIA, LLC V. COVALENT, INC., FEDERAL CIRCUIT 2023 (SOFTWARE PATENTS)
Trinity Info Media, LLC sued Covalent, Inc. for infringement of U.S. Patent Nos. 9,087,321 and 10,936,685 relating to methods and systems for connecting users based on their answers to polling questions. U.S. Patent No. 9,087,321 teaches that its claimed invention is “directed to a poll-based networking system that connects users…
HANTZ SOFTWARE, LLC, V SAGE INTACCT, INC., FEDERAL CIRCUIT 2023 (SOFTWARE PATENTS)
Any ineligibility judgment should apply to only claims asserted in a complaint if held patent-ineligible after a motion to dismiss for failure to state a claim. Hantz sued Sage alleging that Sage infringed U.S. Patent Nos. 8,055,559 and 8,055,560. Sage moved to dismiss the complaint for failure to state a…
HAWK TECHNOLOGY SYSTEMS, LLC, V CASTLE RETAIL, LLC, FEDERAL CIRCUIT 2023 (SOFTWARE PATENTS)
A multi-format digital video product system capable of maintaining full-bandwidth resolution while providing professional quality editing and manipulation of images, which is capable of conserving bandwidth while preserving data is not patent-eligible. Appellant Hawk Technology Systems, LLC sued Appellee Castle Retail, LLC in the Western District of Tennessee for patent…
IN RE CERTAIN POLYCRYSTALLINE DIAMOND COMPACTS AND ARTICLES CONTAINING SAME, INTERNATIONAL TRADE COMMISSION 2022 (SUBJECT MATTER ELIGIBILITY)
The ITC took 35 U.S.C. § 101 to its logical extreme in this case, finding that diamond drill bits with certain physical measures are not patent-eligible. The U.S. International Trade Commission conducts unfair import investigations that, most often, involve claims regarding intellectual property rights. US Synthetic Corporation filed an ITC…
Latest News
Licensing by Acquisition: The High-Stakes Dispute Over Whether Intel is Licensed to VLSI’s Patents
The Federal Circuit has issued an interesting nonprecedential order in In re VLSI Technology LLC, denying VLSI’s petition for a writ of mandamus that sought to reverse a district court order allowing Intel to amend its answer to assert a declaratory judgment counterclaim regarding a patent license defense.
The Federal Circuit’s brief order sheds some light on the standards for amending pleadings late in litigation and the propriety of declaratory judgment counterclaims in patent cases even where the underlying infringement claims have been extinguished.
Background: A separate VLSI v. Intel case was before the Federal Circuit in December 2023. In that case, the court overturned VLSI’s $2 billion patent infringement verdict – and remanded for a new trial on damages. VLSI Tech. LLC v. Intel Corp., 87 F.4th 1332 (Fed. Cir. 2023). This appeal involves a separate set of infringement claims based upon a separate family of patents also owned by VLSI (and originating from NXP Semiconductor).
Fortress Investment Group (“Fortress”) created VLSI back in 2016 and subsequently and acquired a number of patents from the Dutch-based NXP Semiconductors. In 2017 VLSI Technology LLC sued Intel Corporation for patent infringement in the Northern District of California, asserting four patents: U.S.
Inventorship Correction Affirmed for Patent on Intermodal Container for Transporting Gaseous Fluids
by Dennis Crouch
In a recent nonprecedential decision, the Federal Circuit affirmed a district court ruling ordering the correction of inventorship for U.S. Patent No. 9,376,049. Tube-Mac Indus., Inc. v. Campbell, No. 2022-2170 (Fed. Cir. Mar. 15, 2024). The patent at issue, originally naming a single inventor (Steve Campbell), claims a lightweight intermodal container system for transporting refrigerated gaseous fluids.
This post examines the reasoning behind the Federal Circuit’s affirmance as well as the potential applicability of the equitable defense of laches in cases brought under 35 U.S.C. § 256 to correct inventorship on an issued patent.
The key technology relates to the container’s “port boss” – essentially a nozzle comprising inner (male) and outer (female) components that are compressed together to sandwich and seal against the liner of the vessel holding the gas. Campbell’s original prototype suffered from problems with the port boss slipping against the liner. To address this issue, Campbell began talking with Gary Mackay and Dan Hewson. Over several months, Mackay and Hewson proposed multiple design changes to the port boss, including:
- Modifying the male baseplate to accommodate an O-ring and add angular grooves to better seal against the liner
- Adding a starburst groove pattern to the female baseplate for torsional rigidity
- Thinning sections of the female pipe component to allow crimping onto the male pipe
Many of these modifications were described and illustrated in the ‘049 patent that Campbell filed on his own – without listing Mackay or Hewson.
The Judicial Conference and Its Random Assignment “Policy”
Guest post by Professors Jonas Anderson[1] and Paul Gugliuzza[2]
On Tuesday, March 12, 2024, the Judicial Conference of the United States—the self-governing body of the federal judiciary—held a press conference and issued a press release touting the Conference’s “strengthen[ing of] the policy governing random case assignment, limiting the ability of litigants to effectively choose judges in certain cases by where they file a lawsuit.”
As we’ve explained in a series of articles, in many federal courts throughout the country, all or practically all cases are assigned to a single judge, giving litigants the ability to “judge shop”—that is, to choose their own judge. Many divisional court houses are associated with a single federal judge, and cases filed in that courthouse are assigned to that predetermined judge.
Judge shopping has been a particularly long-standing problem in patent cases and corporate bankruptcy cases. More recently, Republican state attorneys general have filed numerous challenges to federal government actions on matters such as abortion, gun control, and immigration in single-judge divisions in Texas.
After a few days of confusion about the scope and content of the Judicial Conference’s new policy on case assignment, the Conference subsequently released a three-page document titled Guidance for Civil Case Assignment in District Courts.
Continue reading The Judicial Conference and Its Random Assignment “Policy” at Patently-O.
While one of only three Electrical Engineer attorneys at his previous firm, the firm was ranked #2 in the U.S. for quality of Electrical Patents by PatentRatings, LLC. Deepak Malhotra has developed relationships with litigators and has assisted clients with aggressive enforcement of intellectual property. Software patents, business method patents, electrical patents, and mechanical patents are his specialties.
Deepak Malhotra Is Not Just A Patent Attorney,
He Is An Inventor Too, With Two U.S. Patents In His Name.